In a recent decision¹, the Brazilian Superior Court of Justice (“STJ”) confirmed the understanding that, in cases of evocative or suggestive trademarks, the exclusivity conferred by a registration must be mitigated, since this type of trademark has a low degree of distinctiveness.
In this case, American Airlines filed a nullity lawsuit against the Brazilian Patent and Trademark Office (“INPI”) and American Air, claiming that the defendant’s registration for the trademark “AMERICA AIR” should be cancelled based on the issue of likelihood of confusion as it would be an imitation of plaintiff’s trademark “AMERICAN AIRLINES”.
The lower court ruled in favor of the plaintiff, but the decision was reversed by the Federal Court of Appeals of the Second Region. In a Special Appeal before the STJ, American Airlines argued that its trademark had acquired “secondary meaning”, claiming that the expression AMERICAN AIRLINES would be associated by consumers to the company’s services. Thus, the trademark would be sufficiently distinctive for registration purposes, regardless of whether it was composed by generic signs or of common use, which are associated with the service protected by the trademark.
In dismissing the appeal, STJ held that the acquired distinctiveness alleged by American Airlines existed, but was not sufficient to afford the exclusivity intended by the plaintiff. According to STJ, since the trademarks were evocative or suggestive and the companies provided different services, there would be no risk of consumer confusion. Therefore, there would be no legal reason for cancelling American Air’s trademark registration.
¹ REsp 1.773.244